The University of Newcastle Research Associates Limited v Roberto De Toffol - [2007] APO 21

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 775758 in the name of Roberto De Toffol

Title: A Method of Manufacturing Syntactic Foam

Action: Opposition to the grant of a patent by The University of Newcastle Research Associates Limited

Decision: Issued 29 June 2007.
Abstract

The present invention relates to a method of making syntactic foams (a composite material comprising a resin matrix and hollow microspheres) using slip casting techniques. The opposition derives from a final year project that the applicant, Mr De Toffol completed during 1999 under the supervision of Dr Kim. The opponent, TUNRA, alleged that Mr De Toffol was not the inventor or not the sole inventor of the present invention, and was therefore not entitled to the grant of the patent. The opponent did not appear or provide submissions at hearing, but their evidence was to the effect that Dr Kim had directed Mr De Toffol to use slip casting techniques as part of his project. The evidence was determined to be inconsistent with Dr Kim’s account of events, and there was furthermore no apparent material contribution by Dr Kim to the final concept. The opposition therefore failed on the grounds of entitlement.
While the opponent did not address the issues of novelty and inventive step in evidence, regard was had to a document raised in the Statement of Grounds and Particulars against Claims 30 and 32. Claims 30 and 32 were found both novel and inventive in view of this document.
Costs were awarded against the opponent.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 775758 by Roberto De Toffol, and an opposition to the grant of a patent by The University of Newcastle Research Associates Limited.

BACKGROUND

Australian patent application 775758 in the name of Roberto De Toffol was advertised accepted on 12 August 2004. The application claimed priority of 20 June 2000 from provisional application PQ8241. Mr De Toffol was named as the sole inventor as well as applicant.
A notice of opposition under section 59 was filed by The University of Newcastle Research Associates Limited (hereinafter TUNRA) on 11 November 2004. Only two grounds of opposition were raised in the notice. Firstly TUNRA alleged that Mr De Toffol was not an inventor, or not a sole inventor, and that he therefore lacks entitlement to the invention. Secondly, TUNRA alleged that the invention lacks novelty and inventive step in view of a single journal article (Narkis). Only the first ground of opposition was addressed in evidence.
Evidence in support was completed on 11 January 2006, evidence in answer on 11 July 2006, and evidence in reply on 17 November 2006. The matter was heard in Canberra on 14 March 2007. The applicant Mr Roberto De Toffol appeared at hearing, and was accompanied by Mr Oscar De Toffol. Prior to hearing TUNRA advised that they would not be attending or providing submissions, but would not be withdrawing their opposition.
THE EVIDENCE
Evidence in support consisted of a declaration by Dr Ho-Sung Kim of the Department of Mechanical Engineering, University of Newcastle, which included Exhbits HSK-1 to HSK-3; and a declaration by Mr John Douglas Forster of Shelston IP, which included Exhibits JDF-1 to JDF-25.
Evidence in Answer comprised a declaration by Mr Roberto De Toffol, Mechanical Engineer, which included Exhibits RD-1 to RD-18.
Evidence in Reply comprised a declaration by Dr Kim which included Exhibits HSK-4 to HSK-10; and a declaration by Mr Forster.
THE SPECIFICATION
The specification relates to syntactic foams, which are composite materials comprising a resinous matrix that is embedded with preformed particles such as glass or ceramic microspheres. Such foams are distinguished from other foams by the fact that hollow or solid spheres of predetermined size and packing are used to control the density of the foam. Syntactic foams are generally used for applications which require a low density packing material. However, difficulties have been experienced in producing foams that have a density which is comparable to conventional foams.
The density of syntactic foams has generally been restricted by the limited porosity of the foams. Porosity is a measure of the total void volume, and constitutes the sum of the void volume of the microspheres and the interstitial void volume. Current methods provide syntactic foams in which the void volume provided by the microspheres is greater than the void volume provided by the interstitial spaces, and as a result the density of syntactic foams is largely controlled by the void volume of the microspheres. This is a significant limitation, and the density of syntactic foams has typically varied between 0.3 and 0.5 g/cm³, while conventional foams have typically varied between 0.01 and 0.1 g/cm³.
The present invention seeks to address such limitations of the prior art syntactic foams. In particular, syntactic foams are provided which have high microsphere mass fractions, and interstitial void volumes that are greater than the void volume of the microspheres. As a consequence, syntactic foams having densities of less than 0.15 g/cm³ can be obtained. This density is comparable to that of conventional foams.
The method of the invention employs the key step of adding a solvent to the reaction mixture. This reduces the viscosity of the resin binder and provides an adequate coating of the microspheres using a minimum amount of binder. The solvent is then removed from the foam using a porous wick. In preferred embodiments the mould acts as the wick. This is otherwise known as slip casting.
The specification ends with 34 claims, of which Claims 1, 29, 30, 31 and 32 are independent claims. These are as follows:
1. A method of forming a syntactic foam including the steps of:
(a)combining a polymer, microspheres and a solvent to form a slurry;
(b)thereafter removing a portion of said solvent through a porous wick; and
(c)applying conditions which substantially solidify said polymer.
29. A syntactic foam when made by a method including the steps of:
(a) combining a polymer, microspheres and a solvent to form a slurry;
(b)thereafter removing a portion of said solvent through a porous wick; and
(c)applying conditions which substantially solidify said polymer.
30. A syntactic foam wherein the syntactic foam has total void spaces formed from interstitial voids between the microspheres, and microsphere void spaces within the microspheres, and wherein the total interstitial void space is greater than the total microsphere void space.
31. A syntactic foam formed by a method including the steps of:
(a)combining a polymer, microspheres and a solvent to form a slurry;
(b)thereafter removing a portion of said solvent through a porous wick; and
(c) applying conditions which substantially solidify said polymer;
wherein the syntactic foam has total void spaces formed from interstitial voids between the microspheres, and the microsphere void spaces within the microspheres, and wherein the total void space is greater than the total microsphere void space.
32. A syntactic foam wherein the density of the syntactic foam is between 0.055 grams/cm³ and 0.15 grams/cm³.
DECISION
Entitlement
TUNRA alleged that Mr De Toffol was not the inventor or not the sole inventor of the present invention, and was therefore not entitled to the grant of the patent. While much of the evidence related to circumstances following the development of the invention, no submissions were made in relation to any other means of entitlement such as assignment.
The relevant law on entitlement is set out in Section 15 of the Patents Act:
(1) Subject to this Act, a patent for an invention may only be granted to a person who:
(a) is the inventor; or
(b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
(c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or
(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).
Inventorship has been considered in a number of decisions. A common consideration in these decisions is that a co-inventor need not be directly involved in the final form of the invention, provided their contribution (either solely or jointly with others) had a “material effect on the invention.” This principle was set out in the US decision of Mueller Brass Co v Reading Industries 17 USPQ at page 372:
“The exact parameters of what constitutes joint inventorship are quite difficult to define. It is one of the muddiest concepts in the muddy metaphysics of the patent law. On the one hand, it is reasonably clear that a person who has merely followed instructions of another in performing experiments is not a co-inventor of the object to which those experiments are directed. To claim inventorship is to claim at least some role in the final conception of that which is sought to be patented. Perhaps one need not be able to point to a specific component as one’s sole idea, but one must be able to say that without his contribution to the final conception, it would have been less- less efficient, less simple, less economical, less something of benefit. This Court has found no case in which co-inventorship status was not deemed in some way, at least presumptively, to have beneficially affected the final concept of the claimed invention, and if such a case exists, it would be so anomalous as to warrant little attention.”
Furthermore, the contribution of an inventor can occur at any stage in the development of the invention, and indeed it is not necessary that the inventors work together. Some guidance in this regard is provided by another US decision, Monsanto v Kamp 154 USPQ 259:
“Each needs to perform but a part of the task if an invention emerges from all of the steps taken together. It is not necessary that the entire inventive concept should occur to each of the joint inventors, or that the two should physically work together. One may take a step at one time, the other an approach at different times. One may do more of the experimental work while the other makes suggestions from time to time. The fact that each inventor plays a different role and the contribution of one may not be as great as that of another, does not detract from the fact that the invention is joint, if each makes some original contribution, though partial, to the final solution of the problem.”
A person taking an initial step leading from the problem to the ultimate solution may still be considered an inventor even if another person is needed to finalise the invention. However as noted by the delegate in Primmcoy v Barry Charles Teer 2003 APO 37, this does not generally apply to someone who merely points out the state of the art or explains well known principles, but rather:
“the step must be one that materially contributes to the invention ultimately described and the question sometimes put is whether the invention would have occurred without the involvement of the party seeking to claim entitlement.”
Furthermore, inventorship cannot be reduced to a process of merely identifying the constituents of an invention and attributing each feature to an inventor. As noted by Crennan J in JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68 at [132]:
“Rights in an invention are determined by objectively assessing contributions to the invention, rather than an assessment of the inventiveness of respective contributions. If the final concept of the invention would not have come about without a person’s involvement, then that person has entitlement to the invention. One must have regard to the invention as a whole, as well as the component parts and the relationship between the participants.”
Thus, in order to determine whether or not the contribution of a person had a “material effect” on the final concept of the invention it is necessary to look at the relationship between the participants, the process leading to the invention and the contributions of each party throughout the process (see Bernard Charles Sherman v Merck & Co., Inc., [2007] APO 9).
The final concept
In 1999 Mr De Toffol carried out a project at Newcastle University towards the completion of two compulsory final year subjects. Mr De Toffol chose to work under Dr Kim’s supervision. The first subject was carried out in first semester (22 February to 4 June 1999) and involved completion of a literature review and development of a clear future direction for the project. This included presentation of the project at a seminar and completion of a progress report. The second subject involved experimentation, detailed data analysis and completion of a final thesis. The present dispute relates to an invention developed during the 1999 academic year.

Mr De Toffol stated that “invention” lies in the use of a solvent to reduce the viscosity of the binder and enable adequate coating of the spheres. Excess solvent then needed to be removed, which led to the use of a “wick.” Notwithstanding these submissions, the “final concept” of the invention is defined by the claims, namely low-density syntactic foams and a method for their preparation which involves combining a polymer, microspheres, and a solvent; removing the solvent via a porous wick; and solidifying the foam. This is essentially a slip casting technique. Accordingly, my determination will be based on the “final concept” constituting the preparation of syntactic foams using slip casting.
The process leading to the invention
The evidence from the parties differed most significantly as to the time and circumstances under which the invention was conceived. The gist of Dr Kim’s evidence was that he conceived the invention early in first semester and that he instructed Mr De Toffol to use slip casting techniques as part of his project. In particular, Dr Kim stated that during a presentation entitled ‘Advanced Net-Forming Techniques for Ceramic and Metal Matrix Composites’ by C. C. Sorrell and A. J. Ruys at “The First ACUN International Composites Meeting on Composites: Innovation and Structural Applications” (23 to 25 February 1999), he realized that one of the methods used for casting ceramic and metal matrix composites (namely slip casting) was directly applicable to the manufacture of syntactic foams. He subsequently provided Mr De Toffol with a copy of the presentation (HSK-2, hereinafter referred to as Sorrell), and they discussed the potential application of slip casting to the manufacture of syntactic foams. In particular Dr Kim stated that in following his instructions Mr De Toffol “contributed to manufacturing syntactic foams according to the slip casting method I had suggested to him from the paper by Sorrell and Ruys.”

In contrast, Mr De Toffol disputed that Dr Kim directed him at any time to use slip casting methods. He asserted that he had initially been asked to develop a machine that could be used to prepare syntactic foams using thixotropic methods, but was subsequently told to commence laboratory work using hand mixing compaction techniques. Thixotropic and compaction methods use vibratory or shear forces to temporarily liquefy resins, and in the present case this was intended to allow coating of the spheres without segregation. Mr De Toffol also claimed that the invention was the result of serendipity when a container containing spheres and resin was being cleaned using acetone. The mixture was left for a short time and on returning Mr De Toffol found that it had solidified. He recognised at that point that a solvent could be used to reduce the viscosity of the resin and improve coating of the spheres. The invention was developed independently, and Dr Kim was first informed of the work late in second semester. Dr Kim did not see any of the specimens or experimental techniques until after Mr De Toffol’s thesis was submitted.
Clearly there are significant differences between each account. However, I note that if Dr Kim’s account of events is true then corroborative evidence should be available from early in the project, whereas if Mr De Toffol’s account of events is true then corroborative evidence would only be available from late in second semester. In this regard there are several key pieces of evidence that assist in determining the contribution of each party to the final concept:
(a) The Sorrell paper(HSK-2)
The Sorrell paper was a key piece of the opponent’s case. Mr De Toffol acknowledged that Dr Kim had provided him with a copy of the Sorrell paper. However, he stated that Dr Kim spoke briefly with him concerning this paper, but rather than directing him to use slip casting had said “…with all my knowledge and experience in the area of syntactic foam, I believe thixotropic casting is the way to go.”

Sorrell describes powder processing of ceramic and metal composite materials and while slip casting is reviewed the emphasis is on a “new” process using thixotropic casting that was pioneered by the authors. Indeed Mr De Toffol suggested that Sorrell actually teaches away from the use of slip casting techniques with composite materials. In particular, Sorrell notes that the viscosity and thixotropy of slips are generally below ~5 Pa to enable pouring, but such fluidity results in gravitational segregation in composite materials. Thixotropic casting is said to solve this problem.
(b) The project proposal (HSK-1)
Apparently the standard way of attracting students for undergraduate projects was to place project descriptions on notice boards in the Engineering Faculty. Dr Kim provided a copy of such a project proposal entitled “Coating technique for microspheres” (HSK-1), which was allegedly selected by Mr De Toffol. The proposal shows an apparatus comprising a filter funnel which is connected to a vacuum pump via a solvent trap. A mixture of microspheres and diluted resin is placed in the funnel and excess diluted resin is extracted from the reservoir by filtration. The proposal sets out that:
[t]he aim of this project is to provide a novel manufacturing method of syntactic foams which minimises resin content and thus weight. In this project a suitable method to coat the microspheres with resin from a solution will be developed. By extracting the excess solution will leave the resin coated spheres which can be moulded with heated press (sic). The ratio of the resin to microspheres in the coated sphere is determined by the factors such as solution concentration, time of contact, temperature etc.”
Mr De Toffol did not recall whether HSK-1 was the document he reviewed when he selected his project, but in any case questioned the veracity of the document. In particular, he noted that the document incorrectly identified the co-assessor and referred to a major of “Advanced Materials.” Mr De Toffol further noted that his degree was completed prior to the university requiring students to select a major for their undergraduate degree. Dr Kim addressed the question of the co-assessor in his evidence in reply, but did not address the second issue of the major. In this regard I also note that the document is stamped with an incomplete reference number (“99/……”) and is otherwise undated. However if the proposal relates to the slip casting technique conceived during the ACUN meeting, then presumably it would need to have been created and posted between the ACUN meeting (23 to 25 February 1999) and the first meeting between Mr De Toffol and Dr Kim (recorded by Mr De Toffol as 26 February 1999) in order for Mr De Toffol to have selected it in the “usual manner.” As the opponent did not appear at hearing these issues could not be further clarified. Accordingly, in view of the unresolved issues in relation to the veracity of this document it can be afforded little weight in the present matter.
(c) Experimental directions (RD-7 and RD-9)

Mr De Toffol stated that Dr Kim “did not prove to be a thorough teacher and only taught [me] the basics in the early part of the project.” Indeed Dr Kim and Mr De Toffol had only eight meetings during first semester and only two during second semester. This was in part due to the fact that Mr De Toffol was resident in Sydney and travelled to Newcastle for laboratory sessions. One of their early meetings involved a discussion of a proposed report layout (dated 26 March 1999) in which Dr Kim provided some specific topics to include in the project. Notably the topics included: resins and spheres- typical types for composites, chemistry and thixotropic properties; syntactic foams- use properties, manufacturing methods, thixotropic casting; conventional foams; and ASTM standards. There was no specific mention of slip casting.
Early in second semester Mr De Toffol sought clarification of what was required for his project and was provided with written directions by Dr Kim. The first section of the directions is headed “particle characterisation” and refers to “hand mix” and “vibration mix.” A number of analytical techniques are then set out to determine the physical properties of the foams. The second section is headed “manufacture” and sets out the following instructions:
“Vary fractions of constituents
Quantify as many as possible- measure mixing time
- describe how you mix them
- dry up particles
Find out what would be the lowest resin content
Find breaking pressure of mixture”
There is no actual mention of slip casting, and the only specific method referred to is “vibration mixing” (a thixotropic casting technique). Dr Kim claimed that the reference to “hand mix” included both slip casting and compaction techniques. He also asserted that the instruction to “dry up particles” was an instruction to remove the solvent from the mould. However I note that Mr De Toffol’s project included a section on improving the reproducibility of syntactic foam which included “drying of microspheres” in order to improve coating of microspheres by the resin. I am not satisfied that this document directs the use of any slip casting technique.
(d) The progress report (RD-8 and HSK-4)
At the conclusion of first semester Mr De Toffol prepared a progress report on his project. Chapter 9 of the report, entitled “Low Density Syntactic Foam Casting Methods” discusses thixotropic casting, slip casting and rotational casting techniques. However, whilst these are given as “possible” techniques for the synthesis of syntactic foams, the chapter is a review of prior art casting techniques which essentially paraphrases the Sorrell paper. Moreover, the disadvantages noted in the Sorrell paper for slip casting and rotational moulding of composite materials are given in relation to syntactic foams, as are the advantages of thixotropic casting. The gist of the discussion is that thixotropic casting does not suffer the problems of segregation associated with other techniques such as slip casting.

Chapter 10 of the progress report is entitled “Proposed Coating Techniques” and sets out the intended experimental techniques to be used in the project. The proposed techniques are hand mixing with compaction, hand mixing with vibration, hand mixing with vibration and compaction, and precision coating of spheres with vibration. No reference is made to slip casting.

(e) The final report (HSK-4, HSK-8 to 10)

The final project followed a similar format to the progress report. Chapter 9 is essentially the same as for the progress report. However, Chapter 10 includes techniques such as hand mixing with compaction and thixotropic casting, but additionally includes slip casting.

Dr Kim stated that he instructed Mr De Toffol at the beginning of the project to use slip casting techniques and to compare the resulting foams with those made by compaction and thixotropic techniques. However, I am not satisfied that the written instructions refer in any way to slip casting techniques. Moreover, the absence in the progress report of slip casting as a proposed coating technique is inconsistent with Dr Kim’s submissions that the aim of the project was to compare slip casting techniques with thixotropic and compaction techniques, and there was no explanation of this absence in Dr Kim’s evidence. To the contrary, the subsequent inclusion of slip casting experiments in the final report indicates a clear change in the direction of the project during second semester. The timing of this change is consistent with Mr De Toffol’s account that he conceived the invention in second semester. Accordingly, I must conclude that there were no clear instructions by Dr Kim to employ slip casting techniques in the project.
It could be said that Mr De Toffol would not have been researching in the area of syntactic foams but for the supervision of Dr Kim. However a supervisor is not a joint inventor merely because they are a supervisor. As in any collaboration the issue of joint inventorship must be considered in the context of the project boundaries and the contribution by each party. Some guidance in this regard is given by the U.S. decision Koehring Co. v E. D. Etnyre & Co., 254 F. Supp. 334 (N. D. III. 1966), which considered inventorship in the context of an employer-employee relationship:
“[t]he question of inventorship depends on the actual conduct of the parties with respect to the development of the patent rather than on the legal relationship existing between them.”
The evidence here shows that the final year project had a specific and defined goal (McGill University v Bionomics Limited [2007] APO 6), namely to develop compaction and thixotropic techniques for the synthesis of low density syntactic foams. Slip casting constitutes an entirely different technique and would not follow as a matter of course from the use of thixotropic and compaction techniques. Indeed it was only the serendipitous observation of the effect of acetone on an unsuccessful experiment that set Mr De Toffol on the line of research leading to the invention. This was entirely unexpected and never part of the intended outcome of the final year project. Furthermore, Mr De Toffol independently developed the invention at his residence in Sydney, and there was no apparent discussion of the invention between Mr De Toffol and Dr Kim until after the invention had been reduced to practice. I therefore conclude that the invention was a separate and distinct line of research from the final year project, and that there was no collaboration between the parties.

Notwithstanding this conclusion, the question is whether there was any contribution to the invention by Dr Kim without which the final concept would not have come about. The parties agreed that Dr Kim told Mr De Toffol about some unsuccessful hand mixing and compaction techniques and provided some background information about syntactic foams. This information included the Sorrell paper on which the opponent based much of their case on entitlement. However, as noted above, Sorrell indicates that slip casting techniques are unsuitable for composite materials. In the absence of clear instructions to the contrary Mr De Toffol would have been led away from using slip casting with composite materials. The parties also agreed that Dr Kim directed the choice of resin for the hand mixing and compaction studies, and Mr De Toffol stated that the choice of microspheres was a joint decision. The slip casting technique developed by Mr De Toffol employed similar resins. However, there is no evidence that the particular choice of resins and microspheres materially affects the working of the invention.

On balance I am not satisfied that Dr Kim made a material contribution to the final concept. As a consequence I find that Mr De Toffol is sole inventor and therefore has entitlement to the invention claimed.
Novelty and Inventive step
Whilst the opponent did not address the issues of novelty and inventive step in evidence, I will have regard to a document raised in the Statement of Grounds and Particulars against Claims 30 and 32 (Narkis et al., Polymer Engineering and Science, 1982, 22(7), pp. 417-421). An appropriate test for anticipation is the reverse infringement test (Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228, at page 235). This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co. 16 IPR 545 at page 549). An appropriate test for inventive step is whether it would have been a matter of routine to proceed to the claimed invention from the prior art [Wellcome Foundation Ltd v V. R. Laboratories (Aust.) Pty Ltd (1981) 148 CLR 262 286].
Narkis discloses a method of preparing open cell three-phase hollow foams using rotational moulding under atmospheric conditions to produce a loose-packed, light weight structure. The use of dry powdery resins and heat results in a branching, coral-like structure. Such structures do not have the homogeneity of the present foams, and the free void fraction is largely the result of large cavities that form between clumps comprising microspheres embedded in a resin matrix. This is apparent from two SEM micrograph images of the inner and outer surfaces of the foams. I do not consider that such coral-like structures and cavities can be considered to comprise “interstitial voids between microspheres” as required by present Claim 30. Consequently I do not consider that Narkis discloses the invention as defined in this claim. Furthermore, there is no evidence before me that establishes that the skilled person would be directly led as a matter of routine to the invention claimed in Claim 30 in view of the information provided by Narkis. I therefore consider Claim 30 inventive.
The rotational moulding techniques disclosed by Narkis provide hollow articles such as cubes and spheres. In order to determine the density of the foams, sections of the flat walls of the hollow cubes were cut and analysed. The density of these foams was in the range 0.12 to 0.24 g/cm³, which overlaps with the range of 0.055 to 0.15 defined in Claim 32.
Mr De Toffol disputed whether Narkis anticipated present claim 32. In particular, he questioned whether Narkis could be considered to have achieved the synthesis of a syntactic foam as the loosely-packed light weight structures require surface coating or incorporation in multi-layered articles for use in practical applications. He further noted in this regard that the accepted definition of syntactic foams is “a composite material comprising a binder and preformed filler,” and reinforcement is not mentioned in this definition. I do not consider this argument persuasive as there is no indication that syntactic foams would by definition require any particular level of structural integrity or exclude coated or multi-layered materials. Indeed the application notes that syntactic foams have been used in sandwich composites, a form of multi-layered material.
Mr De Toffol further asserted that the method used by Narkis to determine foam density would not provide an accurate measurement. In particular, he noted that density measurements were carried out on sections taken from the flat walls of hollow cubes. While rotational cube moulding will lead to a flat outer surface, Mr De Toffol asserted that it is highly improbable that consistent flatness will be achieved in the inner surface. Such sections would therefore not provide an accurate determination of the density of the foams. I note that SEM micrographs of the inner and outer surfaces of the foams show significant structural differences between the two surfaces. Moreover, Narkis does not provide any detail of the methods used or the sample preparation, so the validity of the density measurements cannot be assessed. Mr De Toffol’s submissions in relation to this issue appear technically sound.
I note that the role of an opposition is only to refuse a patent application if it is clearly invalid (F. Hoffmann-La Roche AG v New England Biolabs, Inc. (2000) 99 FCR 56). In the present case, the onus is on the opponent to prove that the foams of the present application are disclosed by Narkis. To the contrary, the applicant has provided a prima facie sound technical basis for questioning the validity of the Narkis density measurement, and on balance the opponent has not established that the claims, if granted, would be clearly invalid. Furthermore, there is no evidence before me that establishes that the skilled person would be directly led as a matter of routine to the invention claimed in Claim 32 in view of the information provided by Narkis. I therefore consider Claim 32 both novel and inventive in view of Narkis.
Conclusion
The opposition has failed on the grounds of entitlement, novelty and inventive step.

Costs

The power of the Commissioner to award costs is based on section 210 and regulation 22.8. Costs generally follow the event. I therefore award costs in accordance with Schedule 8 against the opponent TUNRA.
L. F. McCaffery
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : None
Patent attorneys for the opponent : Shelston IP